Artistic Design Elements Separable as Art from Cheerleader Uniforms Are Copyright Protected

The U.S. Supreme Court, ruling on the copyrightability of cheerleading uniforms, held that copyright protection is available for a useful article if the artistic feature “(1) can be perceived as a two-or three-dimensional work of art separate from the useful article, and (2) would qualify as a protectable pictorial, graphic, or sculptural work either on its own or fixed in some other tangible medium of expression if it were imagined separately from the useful article”  into which it is incorporated. Star Athletica, LLC v. Varsity Brands, Inc., 580 U.S.  ________ (2017)(Available Here).

The Supreme Court determined that the arrangement of lines, chevrons, and colorful shapes appearing on the surface of the cheerleading uniforms was eligible for copyright protection as separable features of the design of the cheerleading uniforms.  The Copyright Statute provides protection for “pictorial, graphical, and sculptural works” incorporated into the “design of a useful article,” 17 U.S.C. §101.  This necessarily contemplates that such design can include two-dimensional features.  Separability depends upon whether a feature incorporated into a useful article can be identified separately from and is capable of existing independently of the article’s utilitarian aspects.  See Mazer v. Stein, 347 U.S. 201, 214 (1954).  The artistic feature must be able to exist as its own pictorial, graphic, or sculptural work once it is imagined apart from the useful article.

This holding conforms to the Copyright Act§§ 101 and 113(a).  Together, these provisions make clear that copyright protection extends to pictorial, graphic, and sculptural works regardless of whether they were created as freestanding art or as features of useful articles.

The Copyright Act’s history also supports the holding regarding the coverage of copyright. In Mazer, the Court approved copyright registration in a statuette created for use as a lamp base.  The Mazer Court found that if a design would have been copyrightable as a standalone pictorial, graphic, or sculptural work, it is copyrightable if created first as part of a useful article.  In doing so, the Court extended copyright protection to works of art that might serve a useful purpose.  The Copyright Act was subsequently amended to adopt the separability test.

On the cheerleading uniforms, the surface decorations are separable and therefore eligible for copyright protection.   First, the decorations can be identified as features having pictorial, graphic, or sculptural qualities.  Second, if the decorations were separated from the uniform and put on another medium, they would qualify as two-dimensional art under §101.  Removal of the decorations and applying them on another medium would not replicate the uniform itself.

The Court rejected an argument that the designs were not protectable because (a) they were necessary to the uniforms’ “inherent, essential, or natural functions” (identifying the wearer as a cheerleader) and (b) the designs enhanced the wearer’s physical appearance.  The argument was that the designs are inseparable from the “utilitarian aspects” of the uniform.

“The debate over the relative utility of a plain white cheerleading uniform is unnecessary. The focus of the separability inquiry is on the extracted feature and not on any aspects of the useful article that remain after the imaginary extraction. The statute does not require the decisionmaker to imagine a fully functioning useful article without the artistic feature. Instead, it requires that the separated feature qualify as a nonuseful pictorial, graphic, or sculptural work on its own.”

“Of course, because the removed feature may not be a useful article-as it would then not qualify as a pictorial, graphic, or sculptural work-there necessarily would be some aspects of the original useful article ”left behind” if the feature were conceptually removed. But the statute does not require the imagined remainder to be a fully functioning useful article at all, much less an equally useful one. Indeed, such a requirement would deprive the Mazer statuette of protection had it been created first as a lamp base rather than as a statuette. Without the base, the “lamp” would be just a shade, bulb, and wires. The statute does not require that we imagine a nonartistic replacement for the removed feature to determine whether that feature is capable of an independent existence.”

The Supreme Court “necessarily abandon[ed] the distinction between ‘physical’ and ‘conceptual’ separability, which some courts and commentators have adopted based on the Copyright Act’s legislative history.”

“The statutory text indicates that separability is a conceptual undertaking. Because separability does not require the underlying useful article to remain, the physical conceptual distinction is unnecessary.”

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